TMEP 703: USPTO Does Not Issue Duplicate Registrations

703
USPTO Does Not Issue Duplicate Registrations

The USPTO will not issue two or more identical registrations on
the same register. If two applications on the same register would result in registrations
that are exact duplicates, the USPTO will permit only one application to mature into
registration, and will refuse registration in the other application. 37 C.F.R. §2.48. For
instance, if two identical applications are filed by an applicant, and the USPTO has not
taken action in either application, then the USPTO will refuse registration in both
applications. However, if the USPTO has already taken action in one of the applications
but not the other, then the USPTO will refuse registration in the second application.

The applicant may overcome the refusal(s) by abandoning one of
the applications. If practicable, the USPTO will permit the applicant to choose which
application should mature into registration. If one of the applications has matured into
registration, the applicant may choose to either surrender the registration and allow the
application to proceed to registration, or retain the registration and abandon the
application.

Basis. Applications filed under or amended to §1 of the Trademark Act
would result in duplicate registrations if the only difference between them is that one is
based on use in commerce under §1(a) and the other is based on intent-to-use under §1(b).
However, an application filed under §1 and an application filed under §44 that are
otherwise identical would not result in duplicate registrations, nor would an application
under §66(a) of the Trademark Act that is otherwise identical to an application filed under
§1 or §44.

Classification Change. Where the international classification of
goods/services has changed, a new application for registration of the same mark for the
same goods/services in a different class will not result in a duplicate registration. For
example, if applicant owns a registration of a mark for legal services in Class 42, and
files a new application after January 1, 2007, for registration of the same mark for legal
services in Class 45, this is not a duplicate.

Standard Character/Typed Drawing. An application for registration of a
mark depicted in standard characters would result in a duplicate registration of an
application of the same mark in “typed” format (see
TMEP
§807.03(g)) for the same goods/services.

Standard Character/Special Form. A standard character drawing and a
special form drawing of the same mark would not result in duplicate registrations.

Overlapping Goods/Services. Applications/registrations with
identifications that include some of the same goods/services, but also different
goods/services, would not result in duplicate registrations.

Color. A drawing in which the entire mark is lined for color
(see
TMEP
§808.01(b)), would result in a duplicate registration of a color
drawing of the mark, if the colors are identical. See TMEP
§§807.07–807.07(g) regarding color drawings.

If the applicant claims different shades of a color (e.g.,
purple in one and lavender in the other), any resulting registrations are not
duplicates.

Where one application/registration is not completely lined for
color (i.e., if the mark on the drawing includes color(s) in addition to unclaimed or
unexplained black, white, and/or gray), this would not result in a duplicate registration
of an application seeking registration that includes a claim of the same color(s) in
addition to a claim of color for, or an explanation of the presence of, the
black/white/gray in the drawing. See TMEP §§807.07(d)–807.07(d)(iii) regarding
drawings that include black/white/gray.

Principal/Supplemental Register. An application for registration of a
mark on the Principal Register would not result in a duplicate of an application for
registration of the same mark on the Supplemental Register.

Registrations Issued Under Prior Acts. If eligible, marks registered
under the Acts of 1881, 1905, and 1920 may also be registered under the Act of 1946
(see §46(b) of the Trademark Act of 1946). Even if the mark and the
goods/services in a registration issued under the 1946 Act are identical to the mark and
goods/services in a registration issued under a prior Act, the registrations are not
considered duplicates. See TMEP §§1601.04, 1601.05,
1602.02, and 1602.03 regarding registrations issued
under prior Acts.

Section 66(a) Application Based on Different Int’l Registration. A
§66(a) application would not result in a duplicate registration of another §66(a)
application or registered extension of protection based on a different international
registration.

When an application is a duplicate of a registration owned by
the applicant, and USPTO records show that the registration is still active, the examining
attorney must refuse registration. If the registration is subject to cancellation for
failure to file an affidavit of continued use or excusable nonuse under 15 U.S.C. §1058 or
§1141k, or due to expire for failure to file a renewal application under 15 U.S.C. §1059
(i.e., because the grace period has passed and no affidavit or renewal application has been
filed), and the application is otherwise in condition for approval or final refusal, the
examining attorney must suspend the application until the Trademark database is updated to
show that the registration is cancelled or expired. See TMEP §1611 for
information about how the owner of a registration who has not timely filed a §8 or §71
affidavit or declaration or §9 renewal application may expedite the cancellation or
expiration of its own registration.